On September 11, 2013, the Court of Appeals for the Federal
Circuit reiterated certain standards for determining invalidity of
design patents. In High Point Design LLC v. Buyer's Direct,
Inc., Case No. 2012-1455, plaintiff Buyer's Direct,
Inc. ("BDI") claimed that Defendant High Point Design
("HPD") infringed its design patent and its trade dress
in a fuzzy slipper design.
The slipper protected by BDI's patent (U.S. Design Patent No.
D598,183 (the "'183 patent")) is embodied in its
product called SNOOZIES®. A photo of the SNOOZIES®
slippers and drawings from the '183 patent depicting the
protected slippers are:
On a motion for summary judgment by Defendant, the U.S. District
Court for the Southern District of New York held, among other
things, that the '183 patent was invalid on grounds of
obviousness and functionality. The Federal Circuit, in
reviewing this determination, reversed and remanded, and in doing
so, reiterated the appropriate standards for making such
determinations.
Functionality Requires Assessment of Design As a
Whole:
The Federal Circuit reiterated that design patents cover "any
new, original and ornamental design for an article of manufacture .
. . ." Therefore, the Federal Circuit explained, "a
design patent can be declared invalid if the claimed design is
'primarily functional' rather than 'primarily
ornamental.'" In analyzing whether a design patent
is invalid because it is functional, the Federal Circuit admonished
that the district court incorrectly looked at whether the
design's primary features were functional, rather than
looking at whether the design as a whole was primarily
functional. Holding that the district court applied the
incorrect standard, the Federal Circuit reversed and
remanded.
Obviousness Analysis Critiqued:
The Federal Circuit explained that when evaluating claims of
obviousness, "first, one must find a single reference, a
something in existence, the design characteristics of which are
basically the same as the claimed design." In doing
that, "a court must both (1) discern the correct visual
impression created by the patented design as a whole; and (2)
determine whether there is a single reference that creates
basically the same visual impression." Once that primary
reference is found, "other references may be used to modify it
to create a design that has the same overall visual appearance as
the claimed design." Further, the "ultimate inquiry
in an obviousness analysis is whether the claimed design would have
been obvious to a designer of ordinary skill who designs articles
of the type involved."
The district court used as a primary reference slippers it held
were "indistinguishable" from the '183 patent, along
with secondary references with spots on the soles, and held that
the '183 patent was obvious and thus invalid:
The Federal Circuit reversed and remanded, holding that the
district court erred in several ways in its application of the
standards for determining obviousness.
First, the Federal Circuit held that the district court incorrectly
analyzed obviousness from the perspective of an ordinary
observer rather than an ordinary designer.
The Federal Circuit went on to say that the district court
incorrectly disregarded expert testimony because though an expert
opinion is "not necessary nor controlling," it "may
be relevant to the factual aspects" and thus may be
considered.
Second, the Federal Circuit held that the district court should
have, but did not, make a detailed verbal description of the
claimed design as part of the first step of the analysis in finding
a primary reference. It further held that the district court
failed to provide reasoning as to how the primary reference created
the same visual impressions and as such directed on remand that the
district court do a side-by-side of the patent and the primary
reference.
Finally, the Federal Circuit held that the district court failed to
consider secondary considerations, which if they are present, must
be considered when determining obviousness. In this instance,
the plaintiff put forth alleged evidence of copying and commercial
success, which the Federal Circuit directed the district court to
consider on remand.
By reiterating and clarifying these standards, this Federal Circuit
decision helps to clarify design patent invalidity analysis.
If you have any questions regarding design patents, please contact
the authors or another attorney in the
Intellectual Property Division.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.